There is a new set of rules which govern the '.au' country code top level domain (ccTLD). Those rules have introduced key changes to the eligibility criteria and the ability to rent or lease domain names. In particular, registrants who rely on an Australian registered trade mark to satisfy the Australian presence requirement must now ensure that their '.au' domain name is an exact match to the trade mark.
".au" is the ccTLD for Australia.
On 12 April 2021, the .au Domain Administration Rules: Licensing (New Rules) came into effect. The New Rules consolidated more than 30 policies and guidelines which were previously in place for ".au" domain name licences. The New Rules apply to all registrants who create, transfer or renew a domain name with a ".au" ccTLD and the registrars who administer those domain names. If you had already registered a domain name before 12 April 2021, then the New Rules will not apply to that domain name until your current licence period expires and you renew that domain name, or you transfer it.
While the New Rules are largely similar to the previous rules, there are some important changes to note, including the eligibility rules for the ".com.au" and ".net.au" namespaces and the ability to rent or lease domain names.
Eligibility rules for ".com.au" and ".net.au"
A person applying for any ".au" domain name licence must have an "Australian presence". To prove an Australian presence, a person can show either that they are:
- in effect, registered in Australia (such as an Australian citizen or permanent resident visa holder or a company registered under the Corporations Act); or
- the owner of, or applicant for, an Australian registered trade mark.
A person with an Australian presence must also satisfy any eligibility and allocation criteria for the relevant namespace. The additional criteria is designed to preserve special purpose namespaces (".com.au", ".net.au", ".org.au", ".asn.au" and ".id.au") for use by certain registrants. Importantly, the New Rules incorporate significant changes to eligibility criteria for the ".com.au" and ".net.au" namespaces. Those name spaces are open to registrants who are a commercial entity and who apply for a domain name which is:
- an exact match or acronym to the registrant’s name;
- an exact match to the registrant’s Australian registered trade mark; or
- a match or synonym to the registrant’s goods, services or premises.
The New Rules have expanded and updated the definition of a ‘commercial entity’ to include Commonwealth entities, statutory bodies under commonwealth state or territory legislation, incorporated limited partnerships under State or Territory legislation, trading co-operatives and the government being the crown.
Previously, if a person relied on an Australian registered trade mark to satisfy the Australian presence requirement for the ".com.au" and ".net.au" namespaces, they could register a domain name which was ‘closely and substantially connected’ to that trade mark. However, the New Rules require registrants relying on an Australian registered trade mark to satisfy the Australian presence requirement to choose a domain name which is an ‘Exact Match’ to the words which are the subject of the trade mark registration. The New Rules define ‘Exact Match’ to mean that the domain name is identical to the Australian registered trade mark. The domain name must contain all of the same words in the same order as the Australian registered trade mark (excluding punctuation, articles such as “a”, “the” or “of”, or ampersands).
The effect of this change is that foreign entities who seek to register, or have already registered, domain names in the ".com.au" or ".net.au" namespace must now have an Australian trade mark application or registration in place which is an exact match to the words in that domain. Otherwise, the licence for that domain name may be suspended or cancelled by the registrar or ‘.au’ Domain Administration.
Renting or leasing domain names
Under the New Rules, registrants are not allowed to rent or lease their domain names to a third party. The primary reason for this change is to help ensure that data in the WHOIS database (a database containing each registrant's contact information) reflects who is really behind a particular domain name in the ".au" ccTLD. However, there is an exception to this rule for companies who are related bodies corporate.
It should be noted that the related body corporate exception does not allow an Australian entity to register a ".com.au" or ".net.au" domain name on behalf of its international group company which would not otherwise satisfy the Australian presence requirement. The New Rules specify that if a person is applying for a domain name on behalf of a related body corporate, the related body corporate must still satisfy the Australian presence requirement.
What should you do to keep on top of your domain names?
If your ".au" domain name does not comply with the New Rules, it may be suspended or cancelled. If you own a ".au" domain name registered before 12 April 2021, you can use the time before the domain name is due for renewal to assess whether the domain name satisfies the New Rules and, if it does not, adopt an appropriate strategy.
In order to ensure that your ".au" domain name is compliant, we recommend that you do the following:
- If you rely on an Australian registered trade mark to satisfy the Australian presence requirement, and your ".au" domain name is not an exact match to the trade mark, you should consider alternative ways to show the requisite Australian presence or consider registering a trade mark or a ".au" domain name which is an exact match.
- Review your current portfolio of domain name and trade mark registrations. If a domain name which is an exact match to your Australian registered trade mark, is already registered, you can lodge a complaint through the .au Dispute Resolution Policy. However, you should be aware that another person may have a legitimate right to the same domain name as you. For more information see this article that we have written previously on the topic.
- Determine who the domain name is registered to. It is not uncommon for a representative of a company to register the domain name in their name, rather than that of the company. It is best practice for a domain name to be registered to the company that is the owner of the Australian registered trade mark upon which it relies to satisfy the Australian presence requirement.
- Investigate whether you rent or lease a domain name to or from a company who is not a related body corporate. If you do, you should consider whether that domain name needs to be transferred.